Ex Parte Tol

Patent Trial and Appeal Board

Aug 13, 2018

13320614 (P.T.A.B. Aug. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/320,614 11/15/2011 Jeroen Jacob Arnold Toi
24737 7590 08/15/2018
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
2009P00766WOUS 1039
EXAMINER
KUHLMAN, CATHERINE BURK
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
08/15/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEROEN JACOB ARNOLD TOL 1
Appeal2017-004878
Application 13/320,614
Technology Center 3700
Before RICHARD M. LEBOVITZ, JEFFREY N. FREDMAN, and
ELIZABETH A. LA VIER, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to an implantable device, and a
method of using it. The device comprises a transmitter which emits sounds
comprising encoded information in the ultrasonic frequency range about a
status of the implantable device. The Examiner rejected the claims as
obvious under 35 U.S.C. § 103. Appellant appeals the rejection pursuant to
35 U.S.C. § 134. We have jurisdiction under 35 U.S.C. § 6(b). The
rejections are affirmed.
STATEMENT OF THE CASE
Claims 1-3 and 5-15 stand finally rejected by the Examiner as
follows:
1 The Appeal Brief ("Appeal Br.") 3 lists Koninklijke Philips N.V., as the
real party in interest.
Appeal2017-004878
Application 13/320,614
Claims 1-3, 5-7, and 9-15 under pre-AIA 35 U.S.C. § I03(a) as
obvious in view ofFischell et al. (U.S. Pat. No. 6,354,299 Bl, issued Mar.
12, 2002) ("Fischell") and Taenzer (U.S. Pat. No. 6,631,197 Bl, issued Oct.
7, 2003) ("Taenzer"). Final Act. 2.
Claim 8 under pre-AIA 35 U.S.C. § I03(a) as obvious in view of
Fischell and Taenzer as applied to claim 1 above, and further in view of
Greeninger et al. (U.S. No. 6,067,473, issued May 23, 2000) ("Greeninger").
Final Act. 5.
Appellant provided arguments for independent claims 1 and 15, but
not for any of the dependent claims. Appeal Br. 6. The claims therefore all
stand or fall together with claims 1 and 15. 37 C.F.R. § 4I.37(c)(l)(iv).
Claim 1 is directed to an implantable device comprising a transmitter
and claim 15 is directed to a "method for communicating information from
an implantable device to its carrier," where the device comprises a
transmitter with the same properties as the transmitter of claim 1.
Claim 1 is illustrative and reads as follows (indentations added for
clarity):
1. An implantable device, comprising:
a) a control;
b) a transmitter that is controlled by the control unit to
selectively emit sounds into surrounding body material,
wherein said sounds yield signals that are audible
for a carrier of the implantable device, and
wherein the emitted sound comprises modulated
ultrasonic frequencies that have some audio content,
wherein the emitted sound comprising modulated
ultrasonic frequencies codes information about at least one of
the status of the implantable device and the body it is implanted
in, and
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Application 13/320,614
wherein the transmitter is adapted to be implanted
in direct contact with the skull of the carrier of the implantable
device,
wherein the emitted sound comprising modulated
ultrasonic frequencies comprises encoded information in the
ultrasonic frequency range about a status of the implantable
device.
REJECTION BASED ON FISCHELL AND TAENZER
The Examiner found that Fischell describes an implantable device
having a) a control and b) a transmitter as recited in claims 1 and 15. Final
Act. 2. The Examiner further found that the transmitter of Fischell
selectively emits sounds into the surrounding body material which results in
signals that are audible for the carrier (i.e., a human) of the device. Id. at 3.
The Examiner found that the sounds are transmitted by bone conduction. Id.
The Examiner further found that the emitted sound codes information about
a status of the implantable device and/or a status of the user. Id.
The Examiner found that Fischell does not teach that the emitted
sound comprises "modulated ultrasonic frequencies that have some audio
content" as required by the claims. Id. However, the Examiner found that
this deficiency is met by Taenzer which describes a transmitter that "emits
sounds comprising modulated ultrasonic frequencies that have some audio
content to a location where bone conduction will transport the ultrasonic
signal to a hearing mechanism associated with the ear." Id.
The Examiner determined it would have been obvious to one of
ordinary skill in the art at the time of invention "to configure the device
taught by Fischell to emit sound comprising modulated ultrasonic
frequencies that have some audio content, similar to the technique taught by
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Taenzer, in order to provide sound to the user that will not be heard by
others in the vicinity" as also described by Taenzer. Id.
Appellant contends that "Fischell is silent with respect to any
disclosure of using ultrasonic frequencies for transmission of information,
much less wherein such modulated ultrasonic frequencies code
information about at least one of the status of the implantable device and
the body it is implanted in." Appeal Br. 8. Appellant challenges the
Examiner's findings regarding Taenzer "curing the deficiencies of Fischell."
Id. at 9. Appellant states that "Taenzer is silent with respect to at least
encoded information in the ultrasonic frequency range about a status of the
implantable device." Id. Rather, Appellant contends that Taenzer "is
concerned primarily with producing improved sound intensity and quality, in
a manner which is comfortable to wear." Id. Appellant also states that "one
of ordinary skill would have had no motive or reason to replace the
immediately audible frequencies used in Fischell with a more complicated
approach based on ultrasonic frequencies." Reply Br. 8.
Appellant's arguments do not persuade us that the Examiner erred.
First, the Examiner provided an explicit reason to use ultrasonic frequencies
in Fischell's device: "to provide sound to the user that will not be heard by
others in the vicinity." Final Act. 3. As indicated by the Examiner, this is
expressly taught by Taenzer:
Exemplary embodiments of the present invention provide
significant advantages. For example, where a communication
device configured in accordance with the present invention is
used as the speaker transducer worn by the user, the output
from the transducer can be directed toward the skull of the user
and, due to the non-linearities of the ear itself, result in
perceptible sound to the user. However, since audio acoustic
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Application 13/320,614
energy is not produced in the air, audio acoustic sound is not
radiated from the transducer. As such, others in the vicinity of
the user will hear no sound from the transducer, thereby
providing secure secret communication. This is particularly
useful in surveillance or covert operations. Other people near
the user will not be annoyed by incoming signal sounds
produced by the communication device, even in the most quiet
of environments, because audible sounds are not supplied to the
user's outer ear.
Taenzer 4:33--48 (emphases added).
Appellant's contention that Taenzer is not pertinent because it "is
concerned primarily with producing improved sound intensity and quality, in
a manner which is comfortable to wear" (Appeal Br. 8) is not supported by
adequate evidence. While it is true that Taenzer discloses that its system
produces high fidelity sound with improved quality that is comfortable to
wear (Taenzer 3:66--4:7), Taenzer's system is designed for communication
and the purpose of producing ultrasonic signals with high fidelity sound is so
that the signal is inaudible to people near the user. Id. at 4:30-32, 39--43,
54--56. Appellant's characterization of Taenzer as merely improving sound
quality ignores Taenzer's purpose, quoted above, to improve
communication, particularly for providing "secure secret communication."
Id. at 4:33--48. Accordingly, the Examiner's reason to have used an
ultrasonic signal in Fischell's device is supported by a preponderance of the
evidence.
With respect to Appellant's argument that Taenzer does not teach "the
emitted sound comprising modulated ultrasonic frequencies comprises
encoded information in the ultrasonic frequency range about a status of the
implantable device" as recited in the claims, the Examiner relied upon
Fischell for teaching "the audio information codes for information about the
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status of the implantable device and/or the status of the user", citing column
37, lines 22-24 ofFischell2 (Final Act. 3, 6) and explained it would have
been obvious to encode status in an inaudible ultrasonic frequency so that
the status could not be heard by others in the vicinity (Final Act. 3).
To the extent that Appellant is arguing that the "status" limitation per
se distinguishes the claims from the cited prior art, we note that the
transmission of the status of the device to the user is not described in the
Specification or claims as having a functional relationship to the device
(Spec. 2:20-25) and thus it is non-functional descriptive matter under the
printed matter doctrine, which is inadequate to distinguish the claimed
subject matter from the prior art. See In re Ngai, 367 F.3d 1336 (Fed. Cir.
2004); In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983); see also In re
Wirth, 563 F. App'x 777, 778-79 (Fed. Cir. 2014) (non-precedential).
In the Reply Brief, citing column 38, lines 51----37, Appellant states
that Fischell uses its transducer to pick up audible signals, and thus Fischell
"clearly teaches away from using a transducer that operates in an ultrasonic
range as presently claimed, since using a transducer that operates in an
ultrasonic range would prohibit Fischell's disclosed microphone feature."
Reply Br. 7.
This is a new argument and
Any argument raised in the reply brief which was not raised in
the appeal brief, or is not responsive to an argurnent raised in
the examiner's answer, including any designated new ground of
rejection, will not be considered by the Board for purposes of
the present appeal, unless good cause is shown.
2 "The acoustic transducer 1095 can be used to notify the patient that an
event has occurred or that the implanted system 1010 is not functioning
properly."
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37 C.F.R. § 41.41 (b)(2). Appellant has not established this argument was
necessitated and responsive to an argument in the Answer. Nonetheless, we
note that while Fischell does disclose that an acoustical transducer can serve
as a microphone for audible signals, the same transducer is disclosed as
designed to provide information to a person wearing the device (Fischell 38:
8-----25). Taenzer provides an explicit reason as to why one of ordinary skrn in
the mi would have encoded the information as an ultrasonic signal: to avoid
feedback to the pick-up microphone. Taenzer 4:49----53 ("Furthermore, in a
two way or full duplex communication system, feedback of the delivered
sound to the pick-up microphone is avoided because the pick-up microphone
can be made insensitive to the delivered ultrasound and no audible sounds
are present to produce feedback.") Moreover, Appellant does not identify
any teaching in Fischell that criticizes, discredits, or otherwise discourages
the use of ultrasonic signals as disclosed by Taenzer. See In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004).
For the foregoing reasons, the rejection of independent claim 1 and 15
as obvious in view ofFischell and Taenzer is affirmed. Dependent clams 2,
3, 5-7, and 9-14 fall with the independent claims because Appellant did not
give separate reasons for their patentability. 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv).
REJECTION BASED ON FISCHELL, TAENZER, AND GREENINGER
The Examiner rejected claim 8, based on Fischell and Taenzer, and
then further cited Greeninger to meet the additional limitations of dependent
claim 8. Final Act. 5. Appellant states the claim 8 is patentable for the same
reasons as claim 1. Appeal Br. 11. As we did not find their arguments
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persuasive for claim 1, we affirm the rejection of claim 8 for the same
reasons.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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